The Complainant is Hike Limited of Vasant Kunj, India, represented by Saikrishna & Associates, India.
The Respondent is Jamsheer Abdullah of Manjeri, India. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2016. On March 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2016.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on April 11, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is in the business of providing instant messaging and related services for smart phones over the Internet. It offers its services under the HIKE mark and uses two logos in connection with its HIKE mark.
The Complainant has registered trademarks for HIKE in the European Union and has provided copies of its trademark registrations. The registration details are: Registration No. 11405156, registered on July 16, 2015, and Registration No. 11405966, registered on July 31, 2015, in classes 9, 38 and 41 as a word mark and semi-figurative mark, respectively. The Complainant has also provided a list of its pending Indian trademark applications that it has filed, with an earliest filing date of November 4, 2011.
The Complainant launched its instant messaging service in 2012.
The disputed domain name was registered by the Respondent on March 8, 2013.
The disputed domain name resolves to a website appearing to offer the download of various Voice Over Internet Protocol (VOIP) applications. 5. Parties' Contentions A. Complainant
The Complainant states it launched India's first cross-platform instant messaging service in December 2012. The messaging service can be downloaded through Google Play for Android users, the App Store for iOS users and the Windows Store for Windows users. The Complainant claims that there are 70 million downloads of its HIKE Messenger by smart phone users around the world. Users of HIKE Messenger can send messages in eight languages, create pictures by using filtering and doodle tools, share audio, video and document files using HIKE Direct without using the Internet, create groups and make free voice calls to group members.
The Complainant states that the logos for its HIKE mark are distinctive and it has set up strict guidelines for use of its mark and logo. The Complainant states its mark is popular and is the subject of widespread unsolicited media publicity in newspapers, technology blogs and magazines. The Complainant states it has organized a contest known as "Hikeathon" (a play on the term "hackathon"), a two-day offline festival for computer hackers, and mobile developers, computer engineers to show their talent. Another contest organized by the Complainant was the "Indian Sticker Challenge" in March 2015. The Complainant states that in January 2015 it acquired the intellectual property rights for a United States of America voice calling application known as "Zip Phone".
The Complainant contends that the disputed domain name is identical or confusingly similar to a mark in which it has rights. The disputed domain name uses the HIKE mark together with the element "voip", ("VOIP" being short for "Voice Over Internet Protocol") and the Complainant argues that adding "voip" with its mark is likely to increase consumer confusion as users of its messenger service can make voice calls. Therefore, the Respondent's use of its mark with the element "voip" is insufficient to distinguish the disputed domain name from its mark.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name was registered on March 8, 2013, which is after the Complainant had launched its HIKE Messenger service. The Complainant states that the Respondent has made several misleading claims on the website linked to the disputed domain name, such as: "Free VOIP calls can be made for life". Other misleading claims made are: The Complainant's HIKE Messenger can be downloaded from the Respondent site, when no such option exists; VOIP dialers can be downloaded and on clicking the dialers users are redirected to webpages of various dialers, some of which resolve to Google Play and some do not work. The Respondent's website also displays names of two VOIP mobile applications, and the Complainant believes it is unlikely that the Respondent has sought permission to use names of these VOIP applications on the website at the disputed domain name.
The Complainant argues that the Respondent is not commonly known by the disputed domain name and is not using the disputed domain name in connection with a bona fide offering of goods or services but has registered it to generate Internet traffic to the website via confusion with the Complainant's mark. The Complainant further argues that it has not authorized the Respondent to use its mark and that the Respondent being a resident of India ought to have known of the Complainant's mark at the time of registration of the disputed domain name.
The Complainant states that the disputed domain name has been registered and is being used in bad faith. Apart from making false and misleading claims on the website, the use of a confusingly similar domain name that is likely to mislead users as to that website's source is evidence of bad faith, argues the Complainant, who requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To obtain the remedy of transfer of the disputed domain name, the Complainant has to establish the three requirements set out under paragraph 4(a) of the Policy. These are:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
The first requirement under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which it has rights.
The Complainant has provided trademark registration certificates for its HIKE mark as evidence of its rights in the mark. Apart from proof of its registered rights in the mark, the Complainant has provided evidence of its common law rights in the HIKE mark. Such evidence includes proof of use of its mark on its website, proof of third-party and media recognition of its mark, and evidence of promotional events or contests to promote its mark, such as: "Hikeathon" and the "Indian Sticker Challenge".
The entire trademark is reproduced in the disputed domain name. A domain name that contains a trademark in its entirety may be found confusingly similar to the mark.
The Complainant has argued that the non-distinctive element "voip" does not lessen the confusing similarity with its mark but rather is likely to increase it. The Panel notes that the Complainant's HIKE Messenger service allows users to make voice calls. It is a well-accepted proposition in UDRP jurisprudence that a domain name that contains a trademark in its entirety, despite the addition of other terms, suffixes or prefixes may be found to be confusingly similar to that trademark. In the Panel's view the addition of the element "voip" appears to have been made with an intention to cause confusion among consumers. It is well accepted that if a term or word is used along with the trademark that is connected with the Complainant's business it could be found to increase the confusing similarity of the disputed domain name with the trademark. See C LLC v. Bilal Bilkay,WIPO Case No. D2015-0067 (where the addition of the word "games" that described the complainant's business was used along with the trademark in the domain name in question, and it was found to render the domain name in question confusingly similar to the mark).
Accordingly, the element "voip" in the disputed domain name is found to be connected with the business of the Complainant, and the combination "hikevoip" in the second level of the disputed domain name in the present case is found to be confusingly similar to the Complainant's HIKE mark. The Complainant has successfully established the first requirement under paragraph 4(a) of the Policy, that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The second element under paragraph 4(a) of the Policy requires the Complainant to make at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant has submitted that the Respondent is not known by the disputed domain name. The Complainant has drawn attention to the Respondent's use of the disputed domain name and several misleading statements on the website linked to the disputed domain name. Use of another's trademark to mislead users and consumers is not legitimate commercial use. The Panel is of the view that the confusing and deceptive use of the Complainant's mark in the disputed domain name with intent to divert Internet traffic to a website promoting services competitive with the Complainant's, on which misleading statements are made, is not a basis to find any rights or legitimate interests in favor of the Respondent.
The Complainant has stated that the HIKE mark has been used since 2012 and that its domain name was registered on May 3, 2006. The Complainant has further stated that the Respondent has not been given any authorization to use the Complainant's HIKE mark. Under these circumstances, it is reasonable to infer that the Respondent registered the disputed domain name to gain from the popularity associated with the Complainant's HIKE mark and for taking unfair advantage of the trademark value. Misleading users in this manner does not constitute legitimate commercial use or noncommercial fair use of the disputed domain name.
The Respondent has not participated in these proceedings or replied to any of the statements and submissions of the Complainant. Based on the unrebutted pleadings of the Complainant and on the material on record, the Panel finds, for the reasons discussed, that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds the Complainant has successfully established the second element under paragraph 4(a) of the Policy, that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The third element under paragraph 4(a) of the Policy requires the Complainant to establish that the disputed domain name has been registered in bad faith and is being used in bad faith.
The Complainant has referred to the Respondent's choice of domain name and misleading statements on the website at the disputed domain name leading to an inference of bad faith registration and use on the part of the Respondent.
The Panel finds that the Complainant is the proprietor and owner of the HIKE mark, and has provided sufficient evidence to support this finding. The record shows the disputed domain name has been registered after the Complainant's adoption and use of the mark insofar as the Complainant's abovementioned common law rights in the HIKE mark are concerned. The Respondent undoubtedly registered the disputed domain name with knowledge of the Complainant's mark and has been using it with an intention to mislead consumers. This is evident from the manner of use of the mark by adding the element "voip" to the mark in the disputed domain name. The very use of "voip" with the mark shows the Respondent knew of the mark when registering the disputed domain name and its likelihood of attracting and diverting Internet traffic, based on the HIKE mark.
The Respondent has on the website supposedly offered free VOIP calling and has provided links to download VOIP dialers. These facts and circumstances indicate the Respondent's knowledge of the Complainant's business and its VOIP (or similar) services. The Respondent's registration of the disputed domain name and its misleading statements on the website at the disputed domain name shows abusive use of the Complainant's trademark. The evidence before the Panel suggests that the Respondent is seeking to make unfair use of the goodwill associated with the Complainant's mark that has been built over a period of time by the Complainant. Such registration and use of a domain name is recognized as bad faith registration and use under the Policy.
The use of a trademark in a domain name that clearly belongs to another that is used in a manner that is purposefully confusingly similar to that mark and furthermore, if the website has misleading content with links to competing third-party sites, has been consistently found to be bad faith registration and use under the Policy. The underlying reasoning being that such use diverts Internet traffic to a respondent's website based on the fame of a complainant's trademark and is therefore considered exploitative or abusive registration and use of a domain name under the Policy.
Given this background, the Respondent's registration of a domain name that is confusing similar to the Complainant's mark and placing content on the website that is likely to mislead Internet users, was clearly done with the intention of attracting Internet users based on the Complainant's mark and creating a likelihood of confusion as to the source of the website. This is recognized as bad faith use of the disputed domain name.
The Respondent's lack of response in this proceeding, in addition to the other circumstances discussed, gives further impetus to the finding that the Respondent has registered and used the disputed domain name in bad faith. In the Panel's view, there are no facts or circumstances that indicate that the registration and use of the disputed domain name by the Respondent was in good faith.
The Panel finds the Complainant has successfully established the third element under paragraph 4(a) of the Policy, that the disputed domain name has been registered in bad faith and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Date: April 25, 2016
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